Filed: Aug. 19, 2014
Latest Update: Aug. 19, 2014
Summary: CONSENT DECREE AND FINAL JUDGMENT GEORGE H. WU, District Judge. The parties, Brickell Financial Services-Motor Club, Inc. and Road America Motor Club, Inc., and Road America 24Hr Roadside Assistance, Inc., having agreed to entry of this Consent Decree and Final Judgment finally disposing of this action, IT IS HEREBY ORDERED, ADJUDGED AND DECREED that: 1. This Court has jurisdiction of this cause of action for trademark infringement under 15 U.S.C. 1051, 15 U.S.C. 1121 and 28 U.S.C. 133
Summary: CONSENT DECREE AND FINAL JUDGMENT GEORGE H. WU, District Judge. The parties, Brickell Financial Services-Motor Club, Inc. and Road America Motor Club, Inc., and Road America 24Hr Roadside Assistance, Inc., having agreed to entry of this Consent Decree and Final Judgment finally disposing of this action, IT IS HEREBY ORDERED, ADJUDGED AND DECREED that: 1. This Court has jurisdiction of this cause of action for trademark infringement under 15 U.S.C. 1051, 15 U.S.C. 1121 and 28 U.S.C. 1331..
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CONSENT DECREE AND FINAL JUDGMENT
GEORGE H. WU, District Judge.
The parties, Brickell Financial Services-Motor Club, Inc. and Road America Motor Club, Inc., and Road America 24Hr Roadside Assistance, Inc., having agreed to entry of this Consent Decree and Final Judgment finally disposing of this action,
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that:
1. This Court has jurisdiction of this cause of action for trademark infringement under 15 U.S.C. §1051, 15 U.S.C. §1121 and 28 U.S.C. §§ 1331 and 1338(a) as they arise under the trademark laws of the United States as forth in the Lanham Act, as well as for California statutory and common law causes.
2. Plaintiff Brickell Financial Services-Motor Club, Inc., d/b/a Road America Motor Club, is a Florida corporation with its principal place of business at 7300 Corporate Center Dr., #601, Miami, Florida 33126.
3. Plaintiff Road America Motor Club, Inc. is a Florida corporation with its principal place of business at 7300 Corporate Center Dr., #601, Miami, Florida 33126.
4. Plaintiffs provide emergency roadside assistance services to motor vehicle owners and motorists under the name ROAD AMERICA. These services are provided in California and throughout the United States.
5. Plaintiffs have extensively used and promoted the ROAD AMERICA marks throughout the world and, consequently, have developed substantial and valuable goodwill in connection with the ROAD AMERICA marks.
6. Plaintiffs are the owner of United States Trademark Registration No. 3,229,466 for ROAD/AMERICA a MAPFRE COMPANY, Registration No. 2,784,355 for ROAD AMERICA, and Registration No. 2,786,489 for ROAD AMERICA and Design (the "Marks"), copies of which have been appended to this Consent Decree and Final Judgment as Exhibit "1".
7. As a result of the continuous use and promotion of Plaintiffs' Marks, these trademarks have become distinctive to designate Plaintiffs and their services from the services of other businesses, and to distinguish the source or origin of such services.
8. Defendant Road America 24Hr Roadside Assistance, Inc. ("Defendant") is a suspended California corporation that conducts business in the state of California.
9. Defendant has provided roadside assistance services using the ROAD AMERICA trademark.
10. Defendant Road America 24Hr Roadside Assistance, Inc. and its officers, agents, servants, employees, attorneys and all those in active concert or participation with any of them who receive actual notice of this Consent Decree and Final Judgment, by personal service or otherwise, are hereby conjoined from:
(a) Registering, in any manner, or using, in any manner, ROAD AMERICA or any other marks, designations, domain names, or email addresses consisting of or including these terms, or misspellings of these terms, or terms similar to these marks or any other of Plaintiffs' affiliates, marks, trade names or domain names;
(b) Representing directly or indirectly, in any form or manner whatsoever, that any products or services offered for distribution or sale by Defendant are related to, affiliated with, approved by or sponsored by Plaintiffs;
(c) Passing off, inducing or enabling others to offer or pass off any products or services, not offered or rendered by Plaintiffs, as being products or services of Plaintiffs, or as being products or services sponsored by, approved by or somehow affiliated with Plaintiffs;
(d) Committing any other acts calculated to cause consumers to believe that the products and services of Defendant, or that the business of Defendant is that of Plaintiffs or is somehow related to Plaintiffs, and from otherwise unfairly competing with Plaintiffs in any manner; and
(e) Committing any other acts which will tarnish, blur or dilute, or have the tendency to tarnish, blur or dilute the distinctive quality of the famous ROAD AMERICA mark.
11. Defendant is hereby ordered to cease any and all use of the designation ROAD AMERICA in connection with all products and services immediately.
12. Defendant shall destroy all signage, promotional materials and products consisting of the ROAD AMERICA trademark immediately
13. Subject to the parties' settlement agreement, each party shall bear its own costs associated with this action.
14 This Court shall retain jurisdiction of this matter as may be necessary to enforce this Consent Decree and Final Judgment.
IT IS SO ORDERED.
